Many jurisdictions have provisions that prohibit the registration of offensive marks in accordance with moral and public policy concerns. For example, section 9(1)(j) of Trade-marks Act prohibits the registration of “any scandalous, obscene or immoral word or device.”  and Australia[1] also enforce similar clauses. Therefore, while the decision in Matal has direct implications for US trademark law, it also raises a host of questions for trademark law around the world.

The amicus briefs filed in Matal present illuminating insights on how the Court may have taken a step too far. The  submitted by the American Bar Association (ABA) is a logical place to begin this analysis, given the foundational issue that was the focus of the submission. The ABA sought to correct the Court of Appeals for the Federal Circuit on the distinction between trademark validity and trademark registrability. In addition to the Court confusing validity and registrability, a finding that section 2(a) of the Lanham Act violates the First Amendment would lead to uncertainty about the consequences of a finding of “unregistrability”. The ABA correctly pointed out that the Court of Appeals in Matal seems to have treated trademark validity and trademark registrability interchangeably, which may have had a compound effect on the final decision. The court did, however, state that the unregistrability on the Principal Register does not prevent a trademark from being used legitimately in commerce. However, the Court of Appeals seems to have also erroneously implied that a determination of unregistrability makes an otherwise valid mark ineligible for protection under the Lanham Act, which, according to the ABA, is incorrect. This means that Simon Tam’s proposed mark THE SLANTS may have been ineligible for registration prior to the ruling in this case, a finding of unregistrability is not determinative of whether or not a mark can be used in commerce

In the event of an infringement or unfair competition claims under the previous law, Tam could have protected his mark through the common law. Furthermore, the Court of Appeals stated that “[w]ithout federal registration, a trademark user cannot stop importation of goods bearing the mark …” While this was not directly relevant to Tam’s situation, it certainly has broad implications for cases to come. Regardless, it is inaccurate. Owners of unregistered trademarks have other federal causes of action at their disposal. Indeed, the ABA gave the example of the possibility of “filing a complaint pursuant to Section 337 of the Tariff Act before the International Trade Commission (“ITC”) to stop the importation of goods bearing the mark that violate those common-law rights.”[2] Moreover, valid yet unregistered marks may also enjoy protection against cybersquatting, according to the Anti-Cybersquatting Consumer Protection Act.[3] In addition, state law causes of action—such as likelihood-of-confusion-based causes of action for infringement, unfair competition, and deceptive trade practices—present other avenues for the owners of unregistered trademarks to enforce their intellectual property rights.

An interesting in support of the USPTO is that any decision the government makes in circumstances such as those giving rise to the dispute in Matal is not necessarily neutral because speech will be inevitably supressed. The brief states that “...a trademark registration is a government-issued document that makes it easier for its owner to suppress the speech of others...” because it is a right to exclude, contrary to the opinion of the Tenth Circuit in . This means that, in trademark law, the government is necessarily interfering with ���dz���DzԱ�’s speech; whether it be the trademark owner’s in the case of a refusal, or competitors’ in the case of a trademark registration. This, according to the professors behind the brief, would “wreak havoc on trademark law”, but can be remedied by a decision in favour of the USPTO. This is because trademark law is content-based rather than viewpoint-based. Prior to this case, anyone could be caught under the disparagement clause, regardless of viewpoint. Disparagement is judged based on the content of the mark. Therefore, the law professors present a valid point when they state that “[u]nder the appropriate analytic framework, the bars of Section 2 reflect acceptable judgments about which symbols should receive legal protection as source identifiers, not penalties imposed on an actor doing business independently of the government.” In essence, the Court of Appeals erred in viewing the Lanham Act’s regulatory scheme as being presumptively unconstitutional because a trademark registration denial is seen as a ban on free speech.

The implications for trademark law are not the only concern with respect to the expansion of free speech when it comes to offensive marks. The of Native American Organizations agrees with the perspective of the law professors above in the sense that “[t]rademarks can function as instruments of speech-suppression precisely because they regulate commercial speech.” In this way, the government plays an important role in the operation of commerce, which facilitates the filtration of disparaging and racist marks. When the government exercised this role with respect to offensive marks prior to Matal, it did not strip the owner of the use of a trademark as a whole, but simply withheld the benefits that registration carries. Therefore, from this perspective, this case confirms the “longstanding use of derogatory Native American imagery”, which also alludes to the attention captured by the Washington Redskins case.

As such, concerns regarding freedom of speech became real in light of Matal, which may be a reason to think that the ruling in this case pushed the boundaries of free speech too far, despite the advantages that it carried for trademark owners. This, in conjunction with the wide range of international uncertainty that Matal has caused, is a factor that makes the decision slightly unsettling and casts doubt as to whether the step taken by the U.S. Supreme Court swung the balance too far in favour of free speech. The full range of these impacts, however, has yet to be seen given the recent issuance of this decision.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

[1] Vicki Huang, “Comparative Analysis of US and Australian Trade Mark Applications for THE SLANTS” (2017), Eur IP Rev at 6[Huang].

[2] Tariff Act, 19 USC § 1337 (2012). See In re Certain Digital Multimeters, & Prods With Multimeter Functionality, Inv No 337-TA-588, USITC Pub 4210, 2010 ITC LEXIS 2867.

[3] Consumer Protection Act, 15 USC § 1125(d).

The post The Confusing Side of Offensive Marks: Matal v Tam’s Implications appeared first on IPOsgoode.

A full Federal Circuit hearing for October 2015 to hear oral arguments.

The provision the courts are referring to is , which prohibits registrations of marks that are scandalous or immoral. The U.S. Patent and Trademark Office (PTO) uses a two-prong test to test if a mark is disparaging. First it examines what the likely meaning of the mark is. Then it determines if that meaning refers to an identifiable group and whether it is disparaging to a substantial composite of that group.

The Lanham Act has allowed for the definition of scandalous, immoral or disparaging trademarks to be left up for debate. However, the statute is not unconstitutionally vague: .

The reopening of The Slants’ case has ignited debate regarding how far governments can go in restricting an individual’s’ right to free speech with regards to trademarks. How the courts proceed in this case will have far reaching implications for the future and could result in a fundamental change of practice regarding the treatment of disparaging marks.

The band for a trademark in 2010  in their explanation of why “The Slants” is derogatory. Originally, the group’s lead singer Simon Tam said the band’s name was not a reference to it’s members’ Asian-American ethnicity, but rather to musical chords. In with TIME magazine, Tam argued that naming the band "The Slants" was reclaiming the word from any derogatory meaning.

As a part of the defense’s argument, Tam’s lawyers  conducted by professors from Illinois’ North Central College and New 91��ɫ which polled members of the Asian/Pacific Islander community. This survey was done in support of Tam’s trademark registration and in it the statement “I find the name of the group The Slants to be disparaging” was posed. 16 percent of participants agreed with the statement while 46 percent disagreed (the remaining 38 percent stated they neither agreed nor disagreed). When participants were asked to answer the question under the presumption that membership of the band was exclusively Asian-American, a majority of respondents agreed they did not think the name is disparaging.

to refuse a trademark registration writing in her ruling that “The Slants would be perceived as offensive by a substantial fraction of Asians”.

However,  Justice Moore attacked a precedential 1981 ruling which allows individuals the right to use their mark despite PTO’s refusal to register it.  there were constitutional reasons to re-examine whether PTO should refuse disparaging marks and arguably harm free speech. This “additional views” section holds no legal weight, but points to a possible shift in the courts’ opinions on disparaging marks.

With the possibility for a shift in the way the U.S. deals with disparaging trademarks, over whether this could change rulings of similar cases, including the Washington Redskins' trademark dispute. Earlier this month a by the federal Trademark Trial and Appeal Board cancelling the team's trademark registrations after its name was deemed disparaging to Native Americans. However, until this new Federal Circuit hearing has taken place, the influence The Slants' case will have is still unclear.

Would The Slants’ fate be any different if they had registered their trademark in Canada? Unlike American law, which allows applicants to continue using their mark even if it is rejected by the trademark office, .

Setting the benchmark for what is perceived as offensive “by a substantial fraction of an identifiable group” is difficult in countries as diverse as the United States and Canada. Of course there are instances where it is obvious whether a term or word is offensive to the majority of a group. However, there are many situations where it is not quite as clear.

As both countries continue to become more diverse, the idea of what is offensive and what is not will blur even further. This raises the question of whether governments should still tightly oversee whether a mark is disparaging. The time and place for governments to closely dictate what is offensive may no longer be needed. In today’s world, individuals turn to online channels to express their disdain for something they deem offensive or rally the masses to boycott a company and/or product. Could the same not work for trademarks? Sure, we can grant a person protection to their mark but it is only useful if individuals are willing to buy goods or services bearing that mark. As Moore J suggested, maybe it is time we re-examine the extent to which a government has the ability to refuse a mark and allow the citizens themselves to decide whether it is truly offensive.

Samantha Sim is an IPilogue Editor and a graduate of Ryerson University's School of Journalism.

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